Regardless of your politics or sensibilities, all of these words were previously denied federal trademark protection because they were all “disparaging” marks, under the Lanham Act 15 U.S.C. § 1052(a). However, in a fairly bold move, the Federal Circuit in its opinion, issued December 22, 2015 held that this aspect of Section 2(a) of the Lanham Act is unconstitutional under both “strict” and “intermediate scrutiny” standards.

The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutinyreview appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional. Because the government has offered no legitimate interests justifying § 2(a), we conclude that it would also be unconstitutional under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech…

In Re Tam, p. 4. The CAFC took the time to track the purpose and the history of the Lanham Act, which was essentially passed to further the two goals of (1) consumer protection and (2) protecting business investment from ” misappropriate by pirates and cheats.” With this backdrop, the CAFC held that Section 2(a)’s restrictions preventing deceptive marks is permissible, but that its prohibitions on “expressive aspects” of marks, or whether the marks are “immoral or scandalous” merely amounted to nothing more than a judgment call by a single trademark examiner:

A single examiner, with no input from her supervisor, can reject a mark as disparaging by determining that it would be disparaging to a substantial composite of the referenced group.

“The Yellow Album” from The Slants

Id. at p. 10. It would seem that this same analysis would apply to other aspects of Section 2(a). In other words, it would seem that the Court would have used the same logic to invalidate the ban on “immoral” or “scandalous” marks, or marks that would otherwise promote violations of federal law. But the Court unfortunately limited its decision:

“We limit our holding in this case to the constitutionality of the § 2(a) disparagement provision. Recognizing,however, that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks, we leave to future panels the consideration of the § 2 provisions other than the disparagement provision at issue here.”

Id. at p. 8 (emphasis added). As a result, if you’re one of the many people attempting to obtain registrations on “immoral” or “scandalous” goods and services, you will still have to side-step this issue until the CAFC receives a direct challenge to it. Thus, if you’re attempting to obtain federal registration on, say, marijuana-related goods and services (which are still listed as a Schedule I drug under the Controlled Substances Act), you will still face these objections from the Trademark Office.

Could this be a sign from the CAFC that it will deplete the Trademark Office’s ammunition within Section 2(a)? It seems like we just need the right case to find out.

]]>https://www.iplitigationblog.com/2015/12/articles/blogroll/federal-circuit-holds-trademark-offices-ban-on-disparaging-marks-is-unconstitutional/feed/0Cannabis Trademark Litigation: Promotion of Cannabis Use Lawful for Trademark Purposeshttps://www.iplitigationblog.com/2015/12/articles/articles/trademark-litigation-concerning-cannabis/
https://www.iplitigationblog.com/2015/12/articles/articles/trademark-litigation-concerning-cannabis/#respondTue, 08 Dec 2015 18:46:28 +0000http://www.iplitigationblog.com/?p=216Continue Reading]]>Cannabis legalization is getting a lot of attention in the country, and many legal commentators have touched on some of the issues at the intersection of trademark law and cannabis-related goods & services. But what happens when cannabis-related trademarks end up in court?

Last year, we talked about Hershey’s Chocolate, Inc. lawsuit (Case No. 2:14-cv-00815-RSL) for Trademark Infringement against Conscious Care Cooperative (Seattle CCC). That case subsequently settled on July 29, 2014 without addressing many of the fun trademark issues some of us were hoping to play out.

But the publisher of the well-known High Times Magazine Trans-High Corp., Inc. has not been shy about asserting its trademark rights in an uneasy area of trademark law (six, as of this writing):

All but one of these cases, again, settled without addressing many substantive trademark issues. However, in Trans-High v. Reimers (2:2014-cv-00279), Trans-High successfully deflected Reimers’ counterclaim attempting to cancel Trans-High’s federal trademarks.

Specifically, a registration may be vulnerable to cancellation if the goods and services for which the registration has been issued, are proven to be unlawful. None of the goods and services for which the registrations have been issued are unlawful. The Controlled Substances Act expressly excludes from its scope a party’s mere advertisement or “promotion” of controlled substances and drug paraphernalia. See 21 U.S.C. § 843(c)(1) (“The term `advertisement’ does not include material which merely advocates the use of a similar material, which advocates a position or practice, and does not attempt to propose or facilitate an actual transaction in a Schedule I controlled substance.”)

Having alleged no illegality (nor any other cognizable basis for cancellation), the Court finds Defendants’ legal theory is not cognizable as a matter of law.

(emphasis added)

[1] None of the goods and services for which the registrations have been issued are unlawful.The Defendant never alleged that the goods and services identified in the HIGH TIMES registrations are unlawful. Therefore, if you attempt to assert a trademark that is being used for illegal goods, you can expect it to be cancelled via counterclaim by the defendant.

[2] The Controlled Substances Act expressly excludes from its scope a party’s mere advertisement or “promotion” of controlled substances and drug paraphernalia. See 21 U.S.C. § 843(c)(1). This statement gives trademark holders a bit more flexibility in describing both the legitimacy of common law marks and registered marks as they are asserted in litigation. In essence, following this analysis, you can obtain a trademark for legitimate goods and services, but then use the same mark in promoting the use of controlled substances – which would otherwise likely be held as “scandalous or immoral” by the USPTO.

If removed from the cannabis context, this holding is pretty plain. But it does provide an important lesson to trademark applicants: even if you don’t describe your services as promoting the use of cannabis in your application, you can still edge into those services and successfully defend against an argument to cancel your mark.

At the moment, federal cannabis trademark litigation is relatively quiet, but with a budding industry (pardon the pun), that is likely to change. Further, it will be interesting to see how state trademarks in this sphere are enforced around potential areas of federal law crossover (stay tuned for The Mary Jane Group v. The Taste of Travel).

I’ll avoid the rampant irony of taking a trademark around Jesus’ name and/or using The Lord’s name in vain for the sake of financial gain. (Isn’t there something about that in the Bible?)

Television/movie star and man-of-many-faces Tyler Perry successfully snatched away the mark: "WHAT WOULD JESUS DO" from Reality TV "star" Kimberly Kearney ("Poprah" on I Want to Work for Diddy). Perry convinced the Trademark Trial and Appeal Board (TTAB) that Kearney never used the Mark and/or abandoned the Mark.

According to the TTAB decision, Perry attempted to register the Mark for "’Entertainment services in the nature of an on-going reality based television program,’ in International Class 41" (Reg. No. 3748123). Perry then successfully convinced the Board that Kearney did not use the Mark in connection with any television program. Three big lessons from all of this …

Lesson #1: Always Answer the Requests for Admission.

Kearney did not respond to Perry’s Requests for Admission. Accordingly, TTAB found that Kearney admitted to everything that Perry requested and that such facts she "admitted" are now "conclusively established." (Fed. R. Civ. P. 36). Even though she denied those facts in her Answer, her failure to respond to the Requests for Admission trump those denials. YIKES. Let that be a lesson to those of you in litigation – Respond to your Requests for Admission.

Lesson #2: Mind Your Meetings

Here, Kearney alleged that she attempted to start a reality show by pitching it to … coincidentally enough … Tyler Perry Studios.

We see this all the time in trademark law. Here’s what probably happened: Kearney likely walked in to TP Studios, gave them an idea for a ridiculous reality show, didn’t really have much protectable IP, but did have a federal trademark on a name for said ridiculous show. Then, the TP Studio executives likely said "no thank you" to Kearny, then decided that she still had a neat name for a show. Tyler Perry studios, realizing Kearny would likely never make anything of the Mark, filed to cancel it and take it away from her. What should you remember from this? Mind Your Meetings!

If you’re going to meet with someone who might steal your intellectual property, make sure you get in a Non-Disclosure Agreement at the very least. Here – it didn’t look like Kearny had much in terms of trademark rights, but this is still very indicative of how many large companies operate. Many have been known to pretend to be disinterested in your ideas only to misappropriate them later. Worse yet, sometimes they will string you along for several weeks/months/years of negotiations to get more information and then tell you they aren’t interested.

Lesson# 3 Actual Use Still Counts

A federally-registered trademark is presumed valid, but that does not make it invincible. In other words, "use it or lose it." If Kearny had actually made use of this trademark in some way relating to producing a show around it, she could have survived cancellation. At the very least, she could have gotten this issue in front of a judge or jury and slowed down the process. The press around the dispute very well could have gotten her a TV deal with someone other than TP Studios. What might be interesting later is if Tyler Perry poaches some of Kearney’s substantive material around her show (assuming she actually has some).

-Tim Billick

]]>https://www.iplitigationblog.com/2014/07/articles/blogroll/tyler-perry-snatches-what-would-jesus-do-mark/feed/0Hershey’s Chocolate Wants to Kill Your Buzzhttps://www.iplitigationblog.com/2014/06/articles/articles/trademark-lawsuit-news/hersheys-chocolate-wants-to-kill-your-buzz/
https://www.iplitigationblog.com/2014/06/articles/articles/trademark-lawsuit-news/hersheys-chocolate-wants-to-kill-your-buzz/#respondMon, 09 Jun 2014 20:57:16 +0000http://iplitigationblog.wplxb.lexblog.oomphcloud.com/2014/06/hersheys-chocolate-wants-to-kill-your-buzz/Continue Reading]]>Hershey’s Chocolate, Inc. filed suit (Case No. 2:14-cv-00815-RSL) for Trademark Infringement in U.S. District Court in Seattle against Conscious Care Cooperative (Seattle CCC), a Seattle company which describes itself as "a non- profit cooperative that is dedicated to providing its members the highest quality of organic medicine or Medical Marijuana in Seattle."

What’s bugging Hershey’s exactly? This (photo credits Kiro TV news):

And this:

According to the Complaint filed Tuesday, June 3, Hershey’s is alleging the following causes of Action

Generally speaking, you cannot get federal protection over your cannabis-related marks. Sections 1 and 45 of the Lanham Act only covers "lawful" use in commerce, but THC, the active high-inducing chemical in marijuana, is still very much illegal under the Controlled Substances Act. Not surprisingly, the Feds aren’t too keen on protecting what they still (half-heartedly) believe to be an illegal substance. Therefore, based on priority of use, and federal protection, Hershey’s very clearly has superior rights in its marks to the Seattle CCC.

WHAT WILL BE THE OUTCOME?

Of course there are many ways to win (and lose) a case. If you remove the cannabis aspects of this case, it’s fairly straight-forward. Hershey’s has superior rights, and a reasonable jury could view the marks to be confusingly similar. This is a fact question, so it’s unlikely that this aspect would be decided on summary judgment.

But the cannabis elements admittedly cloud the analysis. Do federally-protected TM rights in legal candy trump state-protected rights in cannabis candy? Normally, the answer is "yes", but only a handful of states have legalized medicinal marijuana, and only Washington and Colorado (as of June 10, 2014) have legalized recreational marijuana. Seattle CCC could therefore argue that its customers are in a very niche market and very distinct from Hershey’s customers and that no reasonable consumer could possibly mistake a pot treat coming from Hershey’s.

What about the dilution/tarnishment claims? Is Seattle CCC really "diluting" the Hershey’s mark? Would people truly think that "Reefer’s" came from Hershey’s and that the Seattle CCC will likely cause harm to the fine upstanding Hershey’s name? In my very humble opinion, if someone wants to ingest cannabis, they buy and ingest cannabis. If someone wants to buy candy, they buy and ingest candy. Sure, maybe some careless parents might leave some cannabis-candy on the counter and Little Johnny and Little Suzy might mistakenly eat it, but regulating that sort of thing shouldn’t be in the wheelhouse of federal trademark law. We have plenty of state-based organizations for that in Washington.

My cynical/tactical thinking is that Hershey’s is looking to cash-in on the national pot craze without actually getting its hands "dirty" in the business. Hershey’s likely wants to collect a settlement and/or license agreement for pot dealers to use its trade dress and trademarks. Obviously this would only be enforceable in Washington state, because – again – the Feds won’t enforce contracts that are illegal under federal law. This way, Hershey’s won’t openly affiliate with drug dealers; won’t have to invest in the infrastructure to make cannabis candy; and will be able to collect some cash on the side from budding industry (couldn’t resist).

I’ll do my best to follow this case very closely and provide more insight as my time permits. Until then, if you have any questions on trademark issues, feel free to contact Mann Law Group.

Here’s an amusing little class action case filed in Seattle this week. Seems Coach, Inc., well known purveyors of high end handbags and such, in their never-ending zeal to protect innocent consumers from inferior (and, more reasonably priced) "knock off" goods, unleashed their New York lawyers to crack down on one Ms. Gina Kim — a Seattle woman who had the unmitigated nerve to list a supposed "Coach" handbag for sale on her eBay account.

Showing little mercy and no tolerance for those who scoff at trademarks and the God-given right of consumers not to be deceived, Coach demanded removal of the listing, cancellation of Ms. Kim’s eBay account, surrender of the offending bag to Coach, and a monetary payment sufficient to make her think twice about ever trying such a stunt again. Civic-minded eBay, demonstrating its own true mettle, cracked down harshly on Ms. Kim by canceling the listing and terminating her account. It’s satisfying outcomes such as these that warm the hearts of the brave corporate warriors who protect us from such outrageous crimes.

Only one slight problem…

Turns out Ms. Kim was listing a genuine Coach bag that she owned legally and had every right (at least for now) to sell on the secondary or used market.

In her action, Ms. Kim is suing Coach for, among other things, defamation, misrepresentation of trademark infringement, violation of Washington’s Consumer Protection Act and tortious interference with business expectancy. And she is doing it as a class-action case on behalf of other Washington residents who have been similarly harassed. Apparently there is good reason to think she is not alone.

My reaction? You Go, Girl!! Best of luck, and go get ’em!

Now obviously I am slightly biased and have a bit of an ax to grind. After all, I, along with others in my noble calling, am frequently accused of "misusing" the patent system and IP rights to take advantage of poor, defenseless, multi-billion dollar corporations who would never dream of using another’s property for free. So when I see these same companies use their powers to crack down on the savage individuals who threaten civilization by selling their own property to make ends meet, it makes me shake my head in sadness. When I see them try this and screw up royally in the process, it brings a smile to my face.